Appeal No. 95-0543
Application 08/008,734
still consider whether the invention of claims 16 and 17 would
have been obvious within the meaning of 35 U.S.C. § 103.
The examiner’s prima facie case of obviousness depends
upon his interpretation that layers 3, 2, 16, 17 and 1 of Potter
can be considered equivalent to the heat eliminator W4 of
appellants’ invention. As we noted above, we cannot agree with
this interpretation of claim 8. Absent this structural
equivalence as asserted by the examiner, there is no evidence on
the record in this case as to why it would have been obvious to
eliminate the intervening layers of Potter and to mount the
carbon component directly onto the heat sink 1. Thus, there is a
difference between claim 8 and the teachings of Potter which has
not been addressed by the examiner. The failure to address this
difference between claim 8 and Potter results in a failure to
establish a prima facie case of obviousness. Therefore, we do
not sustain the rejection of claims 16 and 17 under 35 U.S.C. §
103.
In summary, we have sustained the rejection of claims 1,
3, 9 and 10, but we have not sustained the rejection of claims 8,
16 and 17. Accordingly, the decision of the examiner rejecting
claims 1, 3, 8-10, 16 and 17 is affirmed-in-part.
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